TechRadium, Inc. v. AtHoc, Inc. et al
Filing
295
MEMORANDUM AND OPINION entered GRANTING 259 MOTION for Summary Judgment. Edulink must submit a proposed order of final judgment no later than 5/17/13. (Signed by Judge Lee H Rosenthal) Parties notified.(leddins, )
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
TECHRADIUM, INC.,
Plaintiff,
VS.
EDULINK SYSTEMS, INC., et al.,
Defendants.
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CIVIL ACTION NO. H-10-1887
MEMORANDUM AND OPINION
TechRadium, Inc. (“TechRadium”) sued various defendants for infringement, alleging that
they sold products incorporating TechRadium’s patented technology without a license or other
permission. The defendants counterclaimed, alleging noninfringement and invalidity. TechRadium
settled or otherwise resolved its claims against all the defendants except Edulink Systems, Inc.
(“Edulink”).
TechRadium’s U.S. Patent No. 7,496,183 (the ’183 Patent) and U.S. Patent No. 7,519,165
(the ’165 Patent) claim a method for providing simultaneous digital message notification to, and
receiving responses from, a large number of users. Edulink develops and markets a digital massnotification system. Following this court’s claim-construction ruling, (Docket Entry No. 251),
Edulink and several defendants who had not settled at that point moved for summary judgment of
noninfringement, (Docket Entry No. 259). TechRadium responded, (Docket Entry No. 263), and
the defendants replied, (Docket Entries No. 267, 268). This court also heard oral argument from
counsel. (Docket Entry No. 293). Since then, all moving defendants but Edulink have settled.
Based on a careful review of the pleadings; the motions, responses, and replies; the summary
judgment evidence; the arguments of counsel; and the applicable law, this court grants summary
judgment for Edulink. Edulink must submit a proposed order of final judgment no later than May
17, 2013.
The reasons for this ruling are explained below.
I.
Background
A.
TechRadium’s Patents
The ’183 Patent has 37 claims. Claim 1 states:
1. A method to provide a digital notification and response to groups
of users having at least one contact device comprising:
storing in a dynamic information database:
user contact data for at least one group of users,
wherein each user in the at least one group of users
has at least one user contact device;
user selected priority information that comprises a
contact order for each user contact device; and
user selected grouping information comprising at least
one group associated with each user contact device;
using an administrator interface to form at least one message;
using an administrator in communication with at least one
processor to initiate transmission of the at least one message
simultaneously to a first group of user contact devices for all
users in the at least one group of users and then
simultaneously to a second group of user contact devices for
all users in the at least one group of users using the user
selected priority information and transmitting the at least one
message through at least two industry standard gateways
simultaneously; and
using the administrator interface to ensure each user in the at
least one group of users is contacted on the first group of user
contact devices before the second group of user contact
2
devices using the user selected priority information.
’183 Patent col. 12 ll. 14–40 (emphasis added).
The ’165 Patent also has 37 claims. They are nearly identical to the claims in the ’183
Patent. The main difference is that Claim 1 of the ’165 Patent contains limitations about “responses”
that do not appear in the ’183 Patent. Claim 1 of the ’165 Patent states:
1. A method to provide a digital notification and response to groups
of users having at least one contact device comprising:
storing in a dynamic information database:
user contact data for at least one group of users,
wherein each user in the at least one group has at least
one user contact device information;
user selected priority information that comprises a
contact order for each user contact device; and
user selected grouping information comprising at least
one group associated with each user contact device;
using an administrator interface to form at least one message;
using an administrator in communication with a processor to
initiate transmission of the at least one message
simultaneously to a first group of user contact devices for all
users in the at least one group of users and then
simultaneously to a second group of user contact devices for
all users in the at least one group of users using the user
selected priority information and transmitting the at least one
message through at least two industry standard gateways
simultaneously;
using the administrator interface to ensure each user in the at
least one group of users is contacted on the first group of user
contact devices before the second group of user contact
devices using the user selected priority information; and
receiving responses from the user contact devices through the
at least two industry standard gateways simultaneously by the
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administrator interface and storing the responses in the
dynamic information database, wherein the responses indicate
the user contact devices that have received the at least one
message and the responses indicate when insufficient user
contact device information exists to contact the user contact
devices.
’165 Patent col. 11 l. 39–col. 12 l. 6 (emphasis added).
This court construed “user” to mean “an intended recipient of a message sent by an
administrator” and “user selected priority information” as “information provided by a user
specifying the order in which that user’s contact devices are to be contacted.” (Docket Entry No.
251).
B.
Edulink’s System
Edulink, which specializes in K–12 education applications, markets the Intouch Notification
System (the “Intouch System”). The Intouch System was developed in 1998. It integrates directly
with many popular K–12 student-management systems. (Docket Entry No. 259, Ex. 10, Aff. of
David Funderburk, President & CEO, Edulink, ¶¶ 5–6).
The Intouch System allows “message blasts” to be sent to multiple devices of a predefined
group. The blast is initiated by a system administrator — usually a school administrator — and sent
to identified devices of the group. Users — usually parents — cannot select their own groups.
Instead, groups are defined by an administrator, who instructs the system who is in each group,
usually using forms collected from parents when students register for school. (Id., ¶ 17). Parents,
as group members, can control what devices are used to contact them by providing that information
to the school. But, according to Edulink, neither group members nor the administrator can set which
device receives a message first, second, or third. (Id., ¶¶ 14–15). If a parent provides an email
address and a text-message number, for example, a message would be immediately sent to both
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contacts, regardless of the device used to receive the message or the order in which the parent’s
device or devices actually receive the message. Edulink characterizes the order in which a message
reaches the various specified devices as “virtually random.” (Docket Entry No. 259, at 13).
“Neither the administrator nor the recipient user can control or influence the order in any meaningful
way.” (Id.)
In an emergency, the Intouch System can be used to send messages to all addresses or
numbers without regard to any priority or order. (Docket Entry No. 259, Ex. 10, ¶¶ 12, 15). Edulink
characterizes its emergency-operation function as designed “to get messages out to all target devices
as soon as possible.” (Docket Entry No. 259). The Intouch System does not withhold message
transmissions; transmission of one message does not depend on confirmation that an earlier message
was received. (Docket Entry No. 259, Ex. 10, ¶¶ 20–21). Nor does the Intouch System’s
administrator interface support discrete “first” and “second” groups, or multiple targeted groups.
(Docket Entry No. 259, at 13). “An administrative user obviously can send messages to different
groups over time, but Edulink’s Intouch System does not provide for coordinated staggered message
distribution at all. ‘Send’ means ‘Send now!’ to Edulink’s Intouch System.” (Id. at 13 n.5).
According to TechRadium, however, Edulink has made claims or statements in marketing
the Intouch System tending to show that it is capable of “stor[ing] the priorities or preferences
identified by a user recipient when more than one device is entered into the system.”1 (Docket Entry
No. 263, at 15). TechRadium cites Edulink’s response to a request for proposal (“RFP”) from
Hillsborough County Public Schools in Florida. (Id. (citing Docket Entry No. 263, Appx., at 9)).
1
Some of the Edulink literature in the record appears to use the term “user” to refer to administrators
or to message recipients. To avoid confusion in light of this court’s claim-construction ruling that user means
the intended recipient of a message sent by an administrator, this court will attempt to clarify by using the
term consistent with the claim-construction meaning.
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In the response to the RFP, Edulink described the Intouch System as follows:
Some of the options that may be selected by users [i.e., administrators] when setting
up notifications include assigning high, medium or low priorities, allowing certain
messages to be left on answering machines (either on the first try or after a selected
number of tries), allowing call recipients to record responses, and randomizing the
call lists. Users [administrators] may also select the ‘one-per-family’ option if a
notification is intended to be delivered only once to each family regardless of the
number of students they have.”
(Docket Entry No. 263, Appx., at 9). In the response to the RFP, Edulink also explained that its
system provides “unlimited grouping capability”:
The data available to users [administrators] for call list creation is automatically
filtered by specific criteria such as the schools assigned to their account or the
teacher ID associated with their account. Users [administrators] may further define
their call lists by using a “point-and-click” Query interface to build Call groups that
may be used immediately or saved for future use. Call Groups save the criteria
associated with them, thus they are dynamic and will always bring up an accurate list
based on information in the student information system.
(Id. at 8).
In the response, Edulink states further that by using its system, “[a]dministrators may record
messages and initiate notifications from telephone or web interface.” (Id. at 15). “In order to create
and initiate a notification, a user [administrator] first decides the type of notification desired. Next
the user [administrator] selects the call list using our Query interface . . . , records a message and
initiates the notification or selects a calling window.” (Id. at 16). As shown in a sample screenshot,
one of the call windows permits “call and email” transmission. (Id. at 19).
Another document, the Edulink System Parent Portal Enrollment Instructions, describes
similar functions. The Instructions tell the parent user–recipient to identify the various “Contact
Devices” — telephones, email addresses, or text-message devices such as cell phones. (Id. at 31).
“For each device,” the parent may “Remove/Change [the] Order” of devices” by “us[ing] the up and
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down arrows to change the priority the order the devices are called in.” (Id. at 32). The parent is
reminded to “enter . . . phone number[s] in the order of importance” because “[o]nce a number is
called and connection is made successfully the system stops calling the other numbers.” (Id.) “Each
contact device can be setup to receive one or more types of notification[ ].” (Id. at 33). Checking
boxes under message-type categories — such as “Always Call,” “Absentee,” or “Emergency” —
will specify that the parent wishes to be contacted on the device for the type of notification checked.
(Id. at 24).
An Edulink “User Guide,” directed toward administrators, also states that the “Method(s)
of Delivery” settings can be used to specify “whether to Call (record voice message), Email (email
text message) or Text (sen[d] text to SMS device).” (Id. at 59). The administrator “can select one,
two, or all three methods of delivery.” (Id.) If an administrator chooses to “work with a database
that is not part of the student information system,” the administrator has the option to “build a user
defined call list” from the database, but “[t]he contact devices (telephone numbers, email addresses)
will appear in the default order for delivery. To use a different order click the Change contact
order . . . option and rearrange the devices to the desired order.” (Id. at 67).
C.
Edulink’s Motion for Summary Judgment
Edulink moved for summary judgment on the basis that its system could not perform every
recited step of the claims at issue. (Docket Entry No. 259, at 16). It also argued that even if its
system were capable of infringement, TechRadium’s patents claimed methods for providing digital
communications to large numbers of recipients and verifying receipt, while Edulink only sold
software that others might be able to use in an infringing way. Edulink argued that mere sale of such
a software or system is insufficient as a matter of law to establish infringement under Ricoh Co. v.
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Quanta Computer Inc., 550 F.3d 1325, 1335 (Fed. Cir. 2008). In response, (Docket Entry No. 263),
TechRadium argued that Edulink did more than make software available that might be used for
infringement. Rather, according to TechRadium, there is evidence in Edulink’s own marketing and
product descriptions showing that Edulink’s system was actually used to infringe. Edulink replied,
(Docket Entry No. 267, at 10–11), and supplemented its response to address the Ricoh argument,
(Docket Entry No. 268).
The arguments and responses are discussed below.
II.
The Applicable Legal Standards
A.
Summary Judgment
Summary judgment is appropriate if no genuine issue of material fact exists and the moving
party is entitled to judgment as a matter of law. FED. R. CIV. P. 56(a). “The movant bears the
burden of identifying those portions of the record it believes demonstrate the absence of a genuine
issue of material fact.” Lincoln Gen. Ins. Co. v. Reyna, 401 F.3d 347, 349 (5th Cir. 2005) (citing
Celotex Corp. v. Catrett, 477 U.S. 317, 322–25 (1986)). If the burden of proof at trial lies with the
nonmoving party, the movant may satisfy its initial burden by “‘showing’ — that is, pointing out
to the district court — that there is an absence of evidence to support the nonmoving party’s case.”
Celotex, 477 U.S. at 325. Although the party moving for summary judgment must demonstrate the
absence of a genuine issue of material fact, it does not need to negate the elements of the
nonmovant’s case. Boudreaux v. Swift Transp. Co., 402 F.3d 536, 540 (5th Cir. 2005) (citation
omitted). “‘An issue is material if its resolution could affect the outcome of the action.’” DIRECTV,
Inc. v. Robson, 420 F.3d 532, 536 (5th Cir. 2005) (quoting Weeks Marine, Inc. v. Fireman’s Fund
Ins. Co., 340 F.3d 233, 235 (5th Cir. 2003)). “If the moving party fails to meet its initial burden, the
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motion for summary judgment must be denied, regardless of the nonmovant’s response.” Quorum
Health Res., L.L.C. v. Maverick Cnty. Hosp. Dist., 308 F.3d 451, 471 (5th Cir. 2002) (citing Little
v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir. 1994) (en banc)).
When the moving party has met its Rule 56(a) burden, the nonmoving party cannot survive
a summary judgment motion by resting on the mere allegations of its pleadings. “[T]he nonmovant
must identify specific evidence in the record and articulate the manner in which that evidence
supports that party’s claim.” Johnson v. Deep E. Tex. Reg’l Narcotics Trafficking Task Force, 379
F.3d 293, 301 (5th Cir. 2004) (citation omitted). “This burden is not satisfied with ‘some
metaphysical doubt as to the material facts,’ by ‘conclusory allegations,’ by ‘unsubstantiated
assertions,’ or by ‘only a “scintilla” of evidence.’” Little, 37 F.3d at 1075 (citations omitted). In
deciding a summary judgment motion, the court draws all reasonable inferences in the light most
favorable to the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).
B.
Patent Infringement
Patent infringement claims involve two analytic steps. Mars, Inc. v. H.J. Heinz Co., 377
F.3d 1369, 1373 (Fed. Cir. 2004); Scanner Techs. Corp. v. ICOS Vision Sys. Corp., 365 F.3d 1299,
1302 (Fed. Cir. 2004). First, the court determines the meaning and scope of the asserted claims.
Scanner, 365 F.3d at 1302; Novartis Pharm. Corp. v. Eon Labs Mfg., Inc., 363 F.3d 1306, 1308
(Fed. Cir. 2004). Second, the claims as construed are compared to the allegedly infringing method
or product to determine whether the claims encompass the accused method or product. Bai v. L&L
Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998). “To support a summary judgment of
noninfringement it must be shown that, on the correct claim construction, no reasonable jury could
have found infringement on the undisputed facts or when all reasonable factual inferences are drawn
9
in favor of the patentee.” Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1353 (Fed. Cir. 2001).
When the movant and nonmovant agree on the meaning of the relevant term, a court need not
formally construe the claims to decide a motion for summary judgment of noninfringement. See
Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
“Infringement requires, as it always has, a showing that a defendant has practiced each and
every element of the claimed invention. BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1380
(Fed. Cir. 2007) (citing Warner-Jenkinson Co., Inc. v. Hilton Davis Corp., 520 U.S. 17, 40 (1997)),
overruled on other grounds, Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1306
(Fed. Cir. 2012) (en banc). The patentee “may do so by relying on either direct or circumstantial
evidence.” Linear Tech. Corp. v. Int’l Trade Comm’n, 566 F.3d 1049, 1060 (Fed. Cir. 2009); see
also Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1272 (Fed. Cir. 1986) (“[P]roof of
inducing infringement or direct infringement [does not] require[] direct, as opposed to circumstantial
evidence . . . . It is hornbook law that direct evidence of a fact is not necessary.” (emphasis
omitted)), abrogated on other grounds, Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed.
Cir. 2008). Because dependent claims incorporate all the limitations of the independent claims from
which they depend, if even one limitation of an independent claim is not met, there can be no
infringement of its dependent claims. Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552
n.9 (Fed. Cir. 1989).
“In order to prove direct infringement, a patentee must either point to specific instances of
direct infringement or show that the accused device necessarily infringes the patent in suit.” ACCO
Brands, Inc. v. ABA Locks Mfrs. Co., 501 F.3d 1307, 1313 (Fed. Cir. 2007). A patentee cannot
prove direct infringement merely by showing that an accused system is capable of infringement
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unless the patent specifically claims the capability to do some thing. Ball Aerosol & Specialty
Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 994 (Fed. Cir. 2009). Similarly, “[t]o infringe
a method claim, a person must have practiced all steps of the claimed method.” Lucent Techs., Inc.
v. Gateway, Inc., 580 F.3d 1301, 1317 (Fed. Cir. 2009). TechRadium must show that Edulink’s
system enabled user-selected contact-device prioritization and, for TechRadium’s method claims,
that prioritization occurred. See BMC Res., 498 F.3d at 1378, 1380; Lucent, 580 F.3d at 1317.
TechRadium may rely on circumstantial evidence to raise a fact issue as to infringement. See
Linear, 566 F.3d at 1060; see also Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1364 (Fed. Cir.
2012) (“‘Direct infringement can be proven by circumstantial evidence.’” (citing, inter alia,
Moleculon, 793 F.2d at 1272)). Such evidence must show “more than the fact that the accused
[technology is] merely ‘capable of’ infringing.” Toshiba Corp., 681 F.3d at 1366.
III.
Analysis
Edulink argues that its system either cannot perform each claimed step of the patents or that
its system has not actually allowed each step to be performed. Edulink argues:
With Edulink’s system, users cannot select priority information that comprises a
contact order for each user contact device as required by each asserted claim because
Edulink’s contact devices are unordered. In Edulink’s system, messages for all
contact devices for a user are initiated simultaneously, thus there is no contact order
(other than all devices simultaneous, a behavior that the user cannot change.)
Edulink’s system cannot use user selected priority information to initiate
transmissions as required by the asserted claims because there is no priority
information, user selected or otherwise, in Edulink’s system.
(Docket Entry No. 259, at 21 (emphasis in original)).2
2
The record reflects some ambiguity about the degree of simultaneity with which the Intouch System
delivers messages. On one hand, Funderburk explained that the messages are sent to all devices within a
group simultaneously. (Docket Entry No. 259, Ex. 10, ¶¶ 5–6). On the other hand, Edulink describes the
order in which messages are received as “virtually random.” (Docket Entry No. 259, at 13). The record
evidence shows that the Intouch System may be able to send a message to all devices simultaneously but
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TechRadium relies in part on the statement in the Edulink Parent Portal Enrollment
Instructions that the Intouch System allows the parent — i.e., the recipient user — to “define[ ]
‘Contact Devices’ (phones, email addresses or text message devices such as cell phones) to receive
school messages with.” (Docket Entry No. 263, Appx., at 33). The parent is reminded to “enter the
phone number in the order of importance” because “[o]nce a number is called and connection is
made successfully the system stops calling the other numbers.” (Id. at 32). The affidavit evidence
provided by David Funderburk shows that the cited sentences are not a complete description of the
Intouch System.
Funderburk stated as follows:
Using Edulink’s system, users cannot select call priority information having a
contact order for each user contact device because the contact devices utilized by
Edulink’s system are generally unordered with respect to the initiation of message
transmissions.
In Edulink’s system, message transmissions for all contact devices for a user, with
one exception, are logically initiated in no particular order by the administrative
interface. (Due to nuances of the various underlying communication technologies
involved, the order of the actual physical initiation of message transmissions is
hidden from and not controlled by either the administrator or the user.)
The exception to the unordered initiation of messages identified above is that for
telephones only, there is an option to require cascaded phone calls, a common and
well known practice. If the cascading option for telephones is selected, all
telephones are treated as a single contact device and each telephone is called in an
order that can be set by the user; the first telephone that answers the call serves as the
contact device for all telephones. If the cascading option for telephones is not
offers no ability to send to all specified devices in one group before sending to a second group, and offers no
control over when or if those messages are actually received by the various devices. TechRadium offers
evidence that the Intouch System can initiate messages simultaneously as evidence of infringement. (Docket
Entry No. 263, at 17). Edulink does not deny that its system is capable of simultaneous message initiation.
Edulink’s materials show that an administrator can initiate simultaneous “call and email” transmissions for
example. (See, e.g., Docket Entry No. 263, Appx., at 19). Even if the Intouch System performs one step
claimed in TechRadium’s patents, Edulink is not liable for infringement, as explained further below, because
the Intouch System does not perform every claimed step. See, e.g., BMC Res., Inc., 498 F.3d at 1380.
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selected, then each telephone is treated as an independent messaging device subject
to the unordered initiation of message transmission described above. Thus, messages
are transmitted to all devices associated with a user without regard to any specified
user priority ordering. Whenever two or more gateways and their associated
protocols are involved (telephone and email, for example,) the user cannot specify
[ ]or control the order messages are initiated.
(Docket Entry No. 259, Ex. 10, ¶¶ 14–16 (emphasis omitted)).
Under the Edulink system, if a “cascading” option for telephones is selected, “all telephones
are treated as a single contact device and each telephone is called in an order that can be set by the
user.” (Id., ¶ 16). If the administrator does not select the “cascading option” for telephone calls,
according to Edulink, there is no user-specification of the order in which telephone calls are
initiated.
Under the cascading option for phone calls, the parent user–recipient may select which
number to be called first, second, and so on. The first number that is reached becomes the last call
made. But this feature is limited to a single means of messaging — telephone calls — that treats the
ordered contacts within a singe category of devices — telephones — as one “device.” Even if three
phone numbers must be called before a number is successfully reached, the Intouch System
“cascading” function considers the message delivered to a telephone device only once. And if the
recipient provides both telephone and email addresses, for example, an email would be sent
regardless of how many numbers are called before the telephone call is delivered to the
user–recipient’s telephone.
According to Edulink, there is no evidence that controverts the affidavit statement that
telephones are the only exception to the unordered initiation of messages, and then only in
“cascading” mode. And in that mode, the Intouch System allows user-selected prioritization among
telephone numbers, not among the message formats that can be received. The Intouch System does
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not, for example, allow user–recipients to prioritize telephone calls over text-messages or emails.
Nor does the Intouch System send messages in a priority order first to defined devices for a certain
group, then to defined devices for a second group. The same is true for the “cascading” mode: the
Intouch System does not wait to telephone a defined second group of telephone numbers pending
the results of telephoning a first group of telephone numbers. Attempts to telephone user–recipients
on telephone numbers identified as secondary are initiated without respect to whether other
user–recipients’ primary telephones were successfully contacted.
Edulink’s argument does not appear fully to explain how the Parent Portal Enrollment
Instructions, which tell the user–recipient to select an “order of importance” or “the priority the
order the devices are called in,” are consistent with Funderburk’s affidavit. The Instructions are not
limited to telephones and telephone numbers. To the contrary, the option to select the order — or
“the priority” — applies to “contact devices,” which are defined to include “phones, email
addresses, [and] text message devices such as cell phones.” (Docket Entry No. 263, Appx., at
31–33). Edulink does state that its “device selection feature differs from the user priority
information required for use in a TechRadium message blast.” (Docket Entry No. 267, at 11 (citing
Docket Entry No. 259, Ex. 10, ¶¶ 14–16)). But this does not fully explain the relationship between
the statement in the Instructions that user-specified priority is limited to cascading phone calls and
the ability of a user–recipient to assign order not only to phone numbers, but also to email addresses
and text-messaging numbers.
Other Edulink materials and Funderburk’s explanation of the telephone-call exception,
however, provide some clarity. Despite the ambiguous reference to “devices,” the Instructions
discuss only the order of telephone calls. This is consistent with Funderburk’s explanation that
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priority of telephone numbers only applies under the cascading option. The Edulink response to the
RFP, the User Guide, and Instructions are consistent with the description that the only Intouch
System feature that allows any ordering is telephone calls. Funderburk did not fully explain the
reason for allowing the user–recipient to move email addresses and text-message numbers up or
down the list of contacts. But TechRadium offers no evidence to contradict Edulink’s explanation
that “Chang[ing the] Order” of nontelephone devices does not actually change their functional
priority. At most, TechRadium’s argument shows that its interpretation of the Instructions is not
inconsistent with one aspect of TechRadium’s infringment claim — that the Intouch System enables
users to prioritize telephone devices. There is no evidence that assigning an order to nontelephone
devices affects the order of message initiation.
Even if the Intouch System arguably enabled some degree of ordering of a user’s devices,
Edulink argues that under Ricoh, “method claims need to be asserted on the basis of actions and
cannot be sustained by solely alleging the existence of software allegedly capable of performing
infringing the steps of the method.”
(Docket Entry No. 268, at 2).
Edulink argues that
“[I]nfringement requires the actual usage of the software performing the method. Infringement
arises not because of anything the underlying software is doing but because of what a user is causing
the software to do.” (Id. at 3 (emphasis in original)). TechRadium argues that, viewing the
summary judgment evidence in the light most favorable to TechRadium, “what [the] user is causing
the software to do” is actually performing the infringing steps. According to TechRadium, the
response to the RFP, the Intouch System Instructions, and the User Guide appear to show that
whenever a parent inputs more than one contact device, or provides one or more email addresses,
text message numbers, or phone numbers, she lists them in order of preference or priority.
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TechRadium argues that this is circumstantial evidence that the Intouch System does in fact allow
users to prioritize the order in which messages are sent to their various contact devices.
A plaintiff may rely on circumstantial evidence to raise a fact issue as to infringement. See,
e.g., Linear, 566 F.3d at 1060; see also Toshiba Corp., 681 F.3d at 1364. Such circumstantial
evidence can include marketing materials and product descriptions tending to show that actual
infringement was necessary for the product to perform as described. See, e.g., Emtel, Inc. v.
Lipidlabs, Inc., — F. Supp. 2d —, —, 2012 WL 5377793, at *9 (S.D. Tex. Oct. 31, 2012)
(explaining that evidence tending to show that the accused system necessarily allowed actual
infringing use to perform as promised to clients showed “‘more than the fact that [the system was]
merely ‘capable of’ infringing” (quoting Toshiba Corp., 681 F.3d at 1366)).
In this case, however, TechRadium’s circumstantial evidence is not sufficient to survive
summary judgment. Edulink’s marketing and product descriptions merely show that parents actually
input more than one piece of contact information, such as a phone number and email address. A
sample screenshot of the administrator interface, for example, shows that one of the call windows
permits “call and email” transmission. (Docket Entry No. 263, Appx., at 19). Edulink also
responded to the concern expressed by the Hillsborough County Public Schools about unanswered
phone calls by representing that the Intouch System could be configured to continue calling until
a “live voice” answered. But an option to select the order of priority of calling applies to no contact
devices beyond phones or message formats beyond telephone calls. Nor is there evidence —
circumstantial or otherwise — tending to controvert Funderburk’s statement that cascaded telephone
numbers are treated as a single device (a telephone) and contact method (a telephone call), and that
other contact devices — such as computers (email) or smartphones (for email and/or text messaging)
16
— are simultaneously contacted notwithstanding attempts to telephone multiple numbers.
The record further defeats TechRadium’s argument that Edulink’s system infringes because
it has “unlimited grouping capabilities.” (Docket Entry No. 263, at16). The record is clear and
consistent that the Edulink system does not allow users to select grouping information. Instead,
grouping is done only by an administrator. Funderburk explained in his affidavit:
Edulink’s system cannot use user selected priority information to initiate
transmissions as required by the asserted claims because there is no priority
information to order message transmissions, user selected or otherwise, in Edulink’s
system.
In Edulink’s system, the administrator interface cannot be used to ensure that a
message blast is received by a first group before automatic transmission of a message
blast to a second group. Edulink’s system is inherently a single group messaging
system and there is no support whatever for coordinated (or staggered) message
blasts and thus no mechanism to withhold the transmission of a message pending
receipt notification of an earlier message blast.
(Docket Entry No. 259, Ex. 10, ¶¶ 19–20 (emphasis omitted)).
TechRadium cites the Intouch System’s feature allowing user–recipients to configure “[e]ach
contact device [to] be setup to receive one or more types of notification[ ].” (Docket Entry No. 263,
Appx., at 33). This capability apparently refers to the feature allowing parents to specify, for
example, that the system should “Always Call” a telephone number, but only “Emergency”
messages should be delivered via text message. (See id. at 24). TechRadium’s patent, however,
refers to the grouping of devices based on priority. There is no evidence here, for example, that
user–recipients group devices as “Emergency” devices as backup contact devices after a failed
attempt to reach an “Always Call” device. Rather, the uncontroverted evidence shows that the
Intouch System allows parents to use these settings to select which messages a device will receive
within those sent to all devices within a group set by a system administrator.
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TechRadium’s argument appears to rest on the confusion in the record caused by Edulink’s
repeated use of the word “user” in the Intouch System materials. But this court’s claim-construction
ruling clarified that “user” in the context of TechRadium’s patent means the message recipient. In
the materials that TechRadium relies on, Edulink used the term “user” to refer to the system
administrator when discussing grouping capabilities. TechRadium has neither presented nor
identified evidence tending to show that user–recipients have performed or are able to perform the
requisite grouping.
In sum, Edulink is entitled to summary judgment.
IV.
Conclusion
The motion for summary judgment is granted. Edulink must submit a proposed order of final
judgment no later than May 17, 2013.
SIGNED on May 1, 2013, at Houston, Texas.
______________________________________
Lee H. Rosenthal
United States District Judge
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